CITE: 97 U.S. 120
CMON: October 1877
PLAIN: Machine Company
DEFND: Murphy
COURT: United States Supreme Court
DATE: October 1877

APPEAL from the Circuit Court of the United States for the Eastern District
of Missouri.
The Union Paper-Bag Machine Company, assignee of William Goodale, to whom
letters-patent No. 24,734, for an improvement in machines for making
paper-bags, were issued July 12, 1859, and subsequently extended, brought
this suit to restrain Merrick Murphy and R. W. Murphy from infringing said
letters.  The respondents justified under letters-patent No. 146,774,
issued Jan. 27, 1874, to Merrick Murphy.
The court below dismissed the bill, whereupon the complainants appealed here.
The remaining facts are stated, and the respective machines described, in the
opinion of the court.

  Two devices doing the same work in the same way with the same results,
  are the same, even if they differ in name, form or shape.


MR. JUSTICE CLIFFORD delivered the opinion of the court.
Rights secured to an inventor by letters-patent are property which consists
in the exclusive privilege of making and using the invention, and of vending
the same to others to be used, for the period prescribed by the Patent Act;
and the provision is, that every patent and any interest therein shall be
assignable in law by an instrument in writing.  Rev. Stat., sects. 4884,
Letters-patent No. 24,734, bearing date July 12, 1859, were granted to
William Goodale, for new and useful improvements in machinery for making
paper-bags, as more fully described in the specification.Patents at that date
were granted for the period only of fourteen years; but the record shows
that the same was duly extended for the further term of seven years from
the expiration of the original term, and that the patentee, on the 14th of
July, two days subsequent to the extension of the patent, by an instrument
in writing, sold and assigned all his right, title, and interest in the
patent to the complainants, who instituted the present suit.  What they
charge is that the respondents are making and using the patented
improvement, the title to which they acquired by virtue of the aforesaid
written assignment.
Service was made; and the respondents appeared and filed an answer, setting
up several defences, all of which are abandoned except the one denying the
charge of infringement. Proofs were taken; and the Circuit Court, having
heared the parties, entered a decree dismissing the bill of complaint. 
Prompt appeal to this court was taken by the complainants; and they now
assign for error the decree of the Circuit Court in dismissing the bill
of complaint, it being conceded that it was dismissed upon the ground that
the charge of infringement was not proved.
Machines for making paper-bags are old, as both sides admit; and the
evidence in this case shows that they have been constructed by many
persons and in various forms for more than twenty years, and with more
or less utility.  Neither party, in this case, claims to be the original
and first inventor of an entire machine of the kind; nor could such a
claim, if made, be sustained, in view of the admitted state of the art.
Improvements in various parts of such a machine are claimed by the assignor
of the complainants; but, inasmuch as the charge of infringement is confined
to the first claim of the patent, it will be sufficient to describe the
nature and operation of the principal device embodied in that claim,
without attempting to give any minute description of the other parts of
the machine.
Seven claims are annexed to the specification, the one in question being
described in substance and effect as follows: Making the cutter which cuts
the paper from the roll in such form that in cutting off the paper it cuts
it in the required form to fold into a bag without further cutting out.
Such a machine, of course, has a frame which supports all its parts, and it
also has a table to support the paper as it is unwound from the roll and
moved forward under the cutter. Prior to the operation, the roll is
prepared, being of the proper width to fold lengthwise and form the bag.
Feed-rollers are arranged in the machine, for moving the paper under the
cutter as it is unwound from the roll, the cutter being attached to a
horizontal bar, and working within vertical guides erected on opposite
sides of the machine. Operating vertically, as the cutter does, it will
be sufficient to state that it derives its upward movement from two cams
on a constantly rotating horizontal shaft, and that it descends by its own
weight, which is sufficient to cause the cutting of the paper by the
cutter, the descent taking place during the intermissions between
the feeding movements of the paper.
Devices and means for forming the bag of the desired length and width are
also shown in the specification and drawings, together with the devices and
means for effecting the side-lapping over the device called the former,
and the devices and means for pasting one edge of the same by passing it
over a paste-roller, which causes it to adhere so as to form the seam when
the edges of the blank are folded over by the lappers.  Both the sides of
the blank, so called, and the lap at the bottom are pasted by the means
described in the specification; but it is unnecessary to enter into these
details in this investigation, as the charge of infringement is limited
to the first claim.
Evidence of a satisfactory character is exhibited to show that the assignor
of the complainants was the first person to organize an operative machine to
make paper-bags from a roll of paper in the flat sheet by a transverse cut
across the same with a knife having five planes, so that the blanks, so
called, when cut and folded, will present a paper-bag of the form and
description given in the specification and drawings of the patent.
Wide differences exist in the arrangement of the devices composing the
operative parts of the respondents' machine in question, from those
exhibited in the machine of the complainants; but the frames are not
substantially different, and the machine of the respondents has two
uprights which afford bearings for the shaft and for the roller on which
the paper is wound, and for two sets of feed-rollers which perform the
same function as the feed-rollers in the complainants' patent. Instead
of the cutter arranged to ascend and descend, as described in the
complainants' specification, the respondents have a knife with a serrated
edge, which is attached to the bed beneath the shaft on a line with the
feed-rollers, lying on its side, so that the paper, when moved by the 
ollers, will pass freely over it, as it extends slightly beyond the edge of
the bed. Being attached to the bed, the knife, though it is substantially
in the form of the cutter employed in the complainants' machine, neither
rises nor falls, nor would it perform any function whatever in the machine
were it not for the striker, which is a straight piece of metal with a
blunt edge made to revolve with the shaft, which, by the aid of certain
other devices, first causes it to rise, and then throws it sharply down
in such a manner that it makes a vertical blow upon the paper, causing
the knife to sever it as effectually as the cutter does in the complainants'
machine, showing that the two devices, to wit, the knife and the striker,
operating together, perform the exact same function as that performed in
the complainants' machine by the ascent and descent of the cutter.
Argument to show that the form of the knife and the cutter are
substantially the same is quite unnecessary, as that is proved to a
demonstration by a comparison of the two devices.  Nor can it make any
difference that the cutter is made to cut the paper by its own gravity,
while the knife is made to cut by the fall of a device which performs no
other function than to fall upon the paper at the proper moment, and
cause the stationary knife to cut for the same purpose.
Decided support to that proposition is found in the testimony of the expert
witness examined for the complainants.  He testifies that he finds in the
patent of the respondents the representation of a cutter for forming
paper-bags, so shaped that, in the operation of separating the blanks
from the roll of paper in the formation of bags, it will perform the same
function as the cutter in the complainants' machine; giving as his reason
for the conclusion, that the serrated edge of the knife, as it is there
called, is so shaped as to form a blank for the bags, so that the seam
may be made in the middle of the bag, and that the bottom is provided
with a lap so that both parts may be firmly pasted together, and the top
provided with a lip for the convenience of opening the bag when it is used.
Explanations of a valuable character are also made by the same witness in
respect to the particular form of the knife employed by the respondents
in their machine when used to form the lip at the top or bottom of the bag.
Speaking of the fact that the knife used by the respondents has serrations
or teeth of different degrees of depth, he says that their outer points all
coincide with the same straight line across the paper, and that the operation
of cutting, when it has progressed to the depth of the small teeth in the
knife, becomes substantially the same as that performed by the cutter in
the complainants' machine, for the reason that the rest of the cutting is
continued by a series of cutting edges that have a lap at the bottom and
a lip at the top, or, in other words, the cutting that is commenced in a
straight line ceases as soon as the small teeth cease to cut, and then
the coarser teeth continue the cutting operation down to their full extent,
and constitute a cutter substantially like the one employed in the
complainants' machine.
Suppose the explanation last given is too theoretical for practical
application, still we are all of the opinion that the knife and the striker
employed by the respondents perform substantially the same function as the
cutter in the complainants' machine, with the devices for raising it up
and letting it drop upon the paper as it is moved forward by the rollers.
Except where form is of the essence of the invention, it has but little
weight in the decision of such an issue, the correct rule being that, in
determining the question of infringement, the court or jury, as the case
may be, are not to judge about similarities or differences by the names
of things, but are to look at the machines or their several devices or
elements in the light of what they do, or what office or function they
perform, and how they perform it, and to find that one thing is
substantially the same as another, if it performs substantially the same
function in substantially the same way to obtain the same result, always
bearing in mind that devices in a patented machine are different in the
sense of the patent law when they perform different functions or in a
different way, or produce a substantially different result.
Nor is it safe to give much heed to the fact that the corresponding device
in two machines organized to accomplish the same result is different in
shape or form the one from the other, as it is necessary in every such
investigation to look at the mode of operation or the way the device works,
and at the result, as well as at the means by which the result is attained.
Inquiries of this kind are often attended with difficulty; but if special
attention is given to such portions of a given device as really does the work,
so as not to give undue importance to other parts of the same which are only
used as a convenient mode of constructing the entire device, the difficulty
attending the investigation will be greatly diminished, if not entirely
overcome.  Cahoon v. Ring, 1 Cliff. 620.
Authorities concur that the substantial equivalent of a thing, in the sense
of the patent law, is the same as the thing itself; so that if two devices do
the same work in substantially the same way, and accomplish substantially
the same result, they are the same, even though they differ in name, form,
or shape.  Curtis, Patents (4th ed.), sect. 310.
Apply that principle to the case before court, and it is clear that the
knife in the respondents' machine, when considered in connection with the
striker, is substantially the same thing as the cutter in the machine of
the complainants when put in operation by the means employed to raise it
and let it fall to perform the cutting function, without which the machine
would be of no value.
Tested by these considerations, it is clear that the decree of the Circuit
Court is erroneous, even if the construction of the patent is that which the
respondents assume it to be, as they do not contend that the claim for the
cutter used by the complaints, as embodied in the first claim of their
patent, is invalid.

The decree will be reversed, and the cause remanded with directions to enter
a decree in favor of the complainants, and for further proceedings in
conformity with the opinion of this court; and it is